in connection with its incense stick products business. Apart from being an auspicious and festive brand, thanks to its association with the traditional Hindu ‘festival of lights’ Diwali, HEM has been using the LAMP device as a house-mark on all its products bearing the umbrella brand ‘HEM’ and other sub-brands. The logo invariably appeared on all its product packaging, advertisements, publicity material, stationery and website. HEM’s product range of perfumed incense and incense sticks, perfumed dhoop sticks and incense cones are exported to more than 75 countries globally. HEM has been using the LAMP device in China since 2007. It has also been participating in various international trade fairs and exhibitions in China from time to time.
In or about June 2011, HEM learnt that its reputed ‘LAMP device artistic logo’ was registered by Chengdu Heaven Art in China. While HEM was readying itself to challenge this registration, it got an initial setback in the month of July 2011 when its export consignment was confiscated by the Chinese Industrial and Commercial Bureau, presumably on a complaint made by Chengdu Heaven Art alleging trademark infringement of its identical registered LAMP device trademark. Interestingly, the legal evidence material and empty incense stick sample packs bearing the LAMP device logo sent to our associate Attorney firm in China for preparing the Cancellation action were also detained by the authorities on the ground that the empty sample packs carried the LAMP Device on them. This further delayed the legal action against Chengdu Heaven Art.
In September 2011, R K Dewan & Co. India, assisted HEM to move a Cancellation action before the China Trademark Review and Adjudication Board (TRAB) challenging the blocking registration on the grounds that:
(a) HEM is the rightful owner and proprietor of the copyright in the “LAMP Device” artistic work;
(b) The “LAMP Device” has been widely used and advertised in China and is well-known; and,
(c) The holder of the registered trademark obtained the registration in bad faith.
Since HEM didn’t have a prior trademark application in China and the registration in question was not vulnerable to a non-use cancellation under the Chinese law, HEM could only proceed with a cancellation dispute which meant that HEM needed to prove its extensive use of the trademark within mainland China.
As part of its evidence, HEM produced a letter from the commercial artist who had originally designed the artistic work of the LAMP Device for HEM Corporation in the year 1981, a number of Indian copyright registrations bearing the LAMP device in question, its Indian home registration for the LAMP device trademark of 1994, use and advertisement evidence material for China which included sales invoices, shipping documents, customs declarations, China sales figures, promotional materials, advertisements appearing on the popular Chinese shopping websites such as www.taobao.com, www.ydxiang.com, www.tztart.com and http://shop.tztart.com, declaration from the Chinese distributor of HEM’s products, and proof of HEM’s participation and display of its products in various trade fairs and exhibitions across China.
Chengdu Heaven Art failed to file any reply to HEM’s cancellation action. In its Decision issued early this year, the TRAB held that the Respondent was aware of HEM’s LAMP Device trademark and the registration was obtained without HEM’s authorization and finally, it was obtained by unfair means. TRAB also took note of HEM’s voluminous use evidence material and prior copyright and Indian trademark registrations submitted in support of the Cancellation dispute. The registration being wrongly obtained was finally struck off from the China Register. Armed with this favourable decision, HEM can now comfortably spread its fragrances throughout China.
On a positive note, in this decision, TRAB has deviated slightly from its earlier stand and now recognized the prior Indian copyright work without insisting on a Chinese copyright registration. Copyright in an artistic creative work is inherent by its original creation and is automatically in force without being asserted or declared. Such works need not be “registered” or “applied for” in countries adhering to the Berne Convention (to which both India and China are signatories). Rights flowing from this creation are fully protected and recognized under the Berne Convention.